(172) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2009-0037]
Request for Comments on Interim
Examination Instructions for Evaluating
Patent Subject Matter Eligibility
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: The United States Patent and Trademark Office (USPTO) has
prepared interim examination instructions for evaluating patent subject
matter eligibility under 35 U.S.C. 101 (Interim Patent Subject Matter
Eligibility Examination Instructions) pending a decision by the U.S.
Supreme Court in Bilski v. Kappos. The Interim Patent Subject Matter
Eligibility Examination Instructions will be for use by USPTO personnel
in their review of patent applications to determine whether the claims
in a patent application are directed to patent eligible subject matter
under 35 U.S.C. 101. The USPTO is requesting comments from the public
regarding the Interim Patent Subject Matter Eligibility Examination
Instructions.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before September 28, 2009. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB98.Comments@uspto.gov. Comments may also be
submitted by facsimile to (571) 273-0125, marked to the attention of
Caroline D. Dennison. Although comments may be submitted by mail or
facsimile, the USPTO prefers to receive comments via the Internet.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
comments will be made available for public inspection, information that
is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Caroline D. Dennison, Office of the
Deputy Commissioner for Patent Examination Policy, by telephone at 571-
272-7729, or by facsimile transmission to 571-273-0125, marked to the
attention of Caroline D. Dennison.
SUPPLEMENTARY INFORMATION: The USPTO has prepared Interim Patent
Subject Matter Eligibility Examination Instructions for evaluating
patent subject matter eligibility under 35 U.S.C. 101. The Interim
Patent Subject Matter Eligibility Examination Instructions are based on
the USPTO's current understanding of the law and are believed to be
fully consistent with binding precedent of the U.S. Supreme Court, the
U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and the
Federal Circuit's predecessor courts. The USPTO posted the Interim
Patent Subject Matter Eligibility Examination Instructions on its
Internet Web site (http://www.uspto.gov) on August 27,2009, with a
notice requesting public comment on the Interim Patent Subject Matter
Eligibility Examination Instructions and indicating that written
comments must be received on or before September 28, 2009, to be
ensured of consideration.
The Interim Patent Subject Matter Eligibility Examination
Instructions do not constitute substantive rule making and hence do not
have the force and effect of law. Rejections are and will continue to
be based upon the substantive law, and it is these rejections that are
appealable. Consequently, any perceived failure by USPTO personnel to

follow the Interim Patent Subject Matter Eligibility Examination
Instructions is neither appealable nor petitionable.
The U.S. Supreme Court granted certiorari in Bilski, S.Ct. No. 08-
964. See 556 U.S.------ (June 1, 2009). The USPTO expects that a
decision in Bilski will be rendered sometime before the end of June
2010. The Interim Patent Subject Matter Eligibility Examination
Instructions are to provide instructions to examiners pending a final
decision from the Supreme Court in Bilski. Following the Supreme
Court's decision in Bilski, the USPTO will revise its examination
instructions for evaluating patent subject matter eligibility under 35
U.S.C. 101 for consistency with the Supreme Court's decision.
The Interim Patent Subject Matter Eligibility Examination
Instructions merely revise USPTO examination practice for consistency
with the USPTO's current understanding of the case law regarding patent
subject matter eligibility under 35 U.S.C. 101. Therefore, the Interim
Patent Subject Matter Eligibility Examination Instructions relate only
to interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice. The USPTO is providing
this opportunity for public comment because the USPTO desires the benefit
of public comment on the Interim Patent Subject Matter Eligibility
Examination Instructions; however, notice and an opportunity for public
comment are not required under 5 U.S.C. 553(b) or any other law. See Cooper
Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed.
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does
not require notice and comment rule making for "'interpretative rules, general
statements of policy, or rules of agency organization, procedure, or
practice.'" (quoting 5 U.S.C. 553(b)(A))). Persons submitting written
comments should note that the USPTO may not provide a "comment and
response" analysis of such comments as notice and an opportunity for
public comment are not required under 5 U.S.C. 553(b) or any other law.
September 11, 2009 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office
[1347 OG 110]